Comcast Corporation v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1405001562162
Complainant is Comcast Corporation (“Complainant”), Pennsylvania, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comcasr.com>, registered with Moniker Online Services LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2014; the National Arbitration Forum received payment on May 30, 2014.
On June 4, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <comcasr.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@comcasr.com. Also on June 9, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Comcast Corporation, is a global media and technology company with two primary businesses – Comcast Cable and NBCUniversal. Complainant is the nation’s largest video, high-speed Internet, and phone provider to residential customers under the XFINITY brand and also provides that services to businesses.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the COMCAST mark (e.g., Reg. No. 2,248,808, registered August 21, 2001).
iii. The disputed domain name is confusingly similar to Complainant’s COMCAST mark.
iv. Respondent has not been commonly known by the disputed domain name.
v. Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content.
vi. Respondent is a serial cybersquatter.
vii. Respondent is neither using, nor making any demonstrable preparations to use, the disputed domain name.
viii. Respondent has engaged in typosquatting.
ix. Respondent must have known of Complainant and its mark
x. Respondent registered the <comcasr.com> domain name on November 27, 2005.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COMCAST mark. Respondent’s domain name is confusingly similar to Complainant’s COMCAST mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <comcasr.com> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a global media and technology company with two primary businesses – Comcast Cable and NBCUniversal. Complainant contends that it is the nation’s largest video, high-speed Internet, and phone provider to residential customers under the XFINITY brand and also provides that services to businesses. Complainant owns trademark registrations with the USPTO for the COMCAST mark (e.g., Reg. No. 2,248,808, registered August 21, 2001). Although Respondent resides in New Zealand, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant’s registration of the COMCAST mark with the USPTO sufficiently shows that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant urges that Respondent’s <comcasr.com> domain name is confusingly similar to Complainant’s COMCAST mark. Respondent removes the letter “t” and replaces it with the letter “r” in the disputed domain name. Respondent’s substitution of one letter for another in the domain name does not distinguish it from Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Furthermore, Respondent’s inclusion of a gTLD does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel holds that Respondent’s <comcasr.com> domain name is confusingly similar to Complainant’s COMCAST mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has not been commonly known by the <comcasr.com> domain name. Complainant contends that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant alleges that it has not granted Respondent permission or authorization to use Complainant’s trademark in any manner, including in a domain name. The WHOIS information lists “Domain Admin / Taranga Services Pty Ltd” as the registrant of the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. Thus, the Panel holds that Respondent is not commonly known by the <comcasr.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <comcasr.com> domain name to redirect Internet users to a website that resolves to a blank page and lacks content. Complainant contends that Respondent has failed to make use of the disputed domain name and has not demonstrated any attempt to make use of the domain name. Maintaining a domain name without making active use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel determines that Respondent is not using the <comcasr.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is a serial cybersquatter. Complainant argues that Respondent has been the losing party in 47 UDRP cases between 2009 and 2014. E.g., Capital One Financial Corp. v. Domain Admin / Taranga Services Pty Ltd, FA 1544052 (Nat. Arb. Forum Apr. 2, 2014); Choice Hotels International, Inc. v. Domain Admin / Taranga Services Pty Ltd, FA 1497209 (Nat. Arb. Forum June 12, 2013); MACY’S INC. and its subsidiary MACY’S WEST STORES, INC. v. Domain Admin / Taranga Services Pty Ltd, FA 1483076 (Nat. Arb. Forum Apr. 3, 2013). In Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008), the panel determined that respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii). Accordingly, the Panel concludes that Respondent has registered and is using the <comcasr.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant argues that Respondent is neither using, nor making any demonstrable preparations to use, the disputed domain name. Complainant asserts that Respondent’s <comcasr.com> domain name is being used to redirect Internet users to a website that resolves to a blank page and lacks content. Because Respondent is failing to make an active use of the disputed domain name, the Panel concludes that Respondent has registered and is using the <comcasr.com> domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant claims that Respondent has engaged in typosquatting. Complainant urges that Respondent’s <comcasr.com> domain name is a mere misspelling of Complainant’s COMCAST mark, with the only difference being the replacement of the letter “t” for the letter “r.” In Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007), the panel found bad faith registration and use of the <microssoft.com> domain name as it merely misspelled complainant’s MICROSOFT mark. Thus, the Panel holds that Respondent has registered and is using the <comcasr.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent must have known of Complainant and its COMCAST mark at the time it registered the <comcasr.com> domain name. Complainant argues that its COMCAST brand is widely-known and famous. Complainant contends that it has marketed and sold services under the COMCAST brand since the 1960s, and the COMCAST trademark has been registered with the USPTO since 1986. Based on the record, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the <comcasr.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comcasr.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 9, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page